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8 UNITED STATES DISTRICT COURT
9 SOUTHERN DISTRICT OF CALIFORNIA
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11 AMERICAN CALCAR, INC., CASE NO. 06cv2433 DMS (CAB)
12 Plaintiff, ORDER GRANTING AMERICAN
vs. HONDA’S MOTION FOR
13 JUDGMENT AS A MATTER OF
LAW OF NO WILLFUL
14 AMERICAN HONDA MOTOR CO., INC.; INFRINGEMENT
HONDA OF AMERICA
15 MANUFACTURING, INC., [Docket Nos. 496, 544]
16 Defendants.
____________________________________
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AND RELATED COUNTERCLAIM.
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20 This case comes before the Court on American Honda’s motion for judgment as a matter of

21 law of no willful infringement. Calcar has filed an opposition to the motion, and Honda has filed a

22 reply. For the reasons set out below, the Court grants the motion.

23 I.

24 DISCUSSION

25 Honda moves for judgment as a matter of law on the issue of willful infringement. In support

26 of its motion, Honda asserts “it presented substantial and credible invalidity defenses at trial and

27 throughout this litigation.” (Mem. of P. & A. in Supp. of Mot. at 2.) Calcar disputes this assertion,

28 and argues there is sufficient evidence for a jury to find willful infringement.

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 1 A. Standard of Review
2 Federal Rule of Civil Procedure 50(a)(1) provides:
3 If a party has been fully heard on an issue during a jury trial and the court finds that
a reasonable jury would not have a legally sufficient evidentiary basis to find for the
4 party on that issue, the court may:
5 (A) resolve the issue against the party; and
6 (B) grant a motion for judgment as a matter of law against the party on a claim or
defense that, under the controlling law, can be maintained or defeated only with a
7 favorable finding on that issue.
8 Fed. R. Civ. P. 50(a)(1). In the Ninth Circuit, “‘[j]udgment as a matter of law is appropriate when the
9 evidence presented at trial permits only one reasonable conclusion.’” Torres v. City of Los Angeles,
10 548 F.3d 1197, 1205 (9th Cir. 2008), petition for cert. filed, (U.S. Feb. 10, 2009) (No. 08-1037),
11 (quoting Santos v. Gates, 287 F.3d 846, 851 (9th Cir. 2002)). “In other words, ‘[a] motion for a
12 judgment as a matter of law is properly granted only if no reasonable juror could find in the non-
13 moving party’s favor.’” Id. (quoting El-Hakem v. BJY Inc., 415 F.3d 1068, 1072 (9th Cir. 2005)).
14 When considering a motion for judgment as a matter of law, the court must view the evidence “‘in the
15 light most favorable to the nonmoving party, and all reasonable inferences must be drawn in favor of
16 that party.’” Id. at 1205-06 (quoting LaLonde v. County of Riverside, 204 F.3d 947, 959 (9th Cir.
17 2000)). “‘If conflicting inferences may be drawn from the facts, the case must go to the jury.’” Id.
18 at 1206 (quoting LaLonde, 204 F.3d at 959).
19 B. Willful Infringement
20 As this Court stated in its order denying Honda’s motion for summary judgment, a
21 determination of willful infringement requires a two-part inquiry. First, “a patentee must show by
22 clear and convincing evidence that the infringer acted despite an objectively high likelihood that its
23 actions constituted infringement of a valid patent.” In re Seagate Technology, LLC, 497 F.3d 1360,
24 1371 (Fed. Cir. 2007) (en banc), cert. denied, ___ U.S. ___, 128 S.Ct. 1445 (2008). Second, if this
25 “threshold objective standard is satisfied, the patentee must also demonstrate that this objectively-
26 defined risk (determined by the record developed in the infringement proceeding) was either known
27 or so obvious that it should have been known to the accused infringer.” Id.
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 1 In its motion, Honda does not focus on whether Calcar presented “a legally sufficient
2 evidentiary basis” to support a finding of willful infringement. Nevertheless, Calcar argues that
3 standard was met. It asserts that Honda had notice of the Notable Condition Patents by at least 2005,
4 and there is substantial evidence to support that assertion. (See Decl. of Jennifer Cozeolino in Supp.
5 of Opp’n to Mot., Exs. 7-10.) Notice of the patents’ existence, however, does not translate to
6 knowledge of potentially infringing activity, and on that issue, there is no evidence, much less
7 substantial evidence. Neither the May 18, 2005 letter from Mr. Obradovich to Dave Heath, Senior
8 Manager of Automobile Sales Communications at American Honda, nor the September 23, 2005
9 subpoena from BMW to the Acura Division of American Honda put Honda on notice that its products
10 infringed the Notable Condition Patents. (See id.) Notice of the patents, alone, does not constitute
11 “clear and convincing evidence that the infringer acted despite an objectively high likelihood that its
12 actions constituted infringement of a valid patent.” Seagate, 497 F.3d at 1371.
13 Aside from the actual evidence presented at trial, Calcar relies on previously issued orders in
14 this case and the jury verdict to support its allegation of willful infringement. Specifically, Calcar
15 relies on the Court’s order granting summary judgment of infringement of the Notable Condition
16 Patents and its order denying summary judgment of invalidity of the Notable Condition Patents, as
17 well as the jury’s finding that the ‘759 Patent is not invalid and its inability to reach a verdict on the
18 ‘961 Patent. Although the Court’s infringement ruling may assist Calcar, its invalidity ruling does not.
19 If anything, that ruling, coupled with the jury’s inability to reach a verdict on the validity of the ‘961
20 Patent, suggests that Honda raised a substantial question about the validity of the Notable Condition
21 Patents, which is sufficient to avoid “a charge of willfulness based on post-filing conduct.” Id. at
22 1374. See also Black & Decker, Inc. v. Robert Bosch Tool Corp., 260 Fed. Appx. 284, 291 (Fed. Cir.
23 2008) (“Under this objective standard, both legitimate defenses to infringement claims and credible
24 validity arguments demonstrate the lack of an objectively high likelihood that a party took actions
25 constituting infringement of a valid patent.”) This “substantial question” is also a proper basis for
26 granting judgment as a matter of law of no willful infringement. See State Contracting & Engineering
27 Corp. v. Condotte America, Inc., 346 F.3d 1057, 1063-64 (Fed. Cir. 2003) (upholding trial court’s
28 ///

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 1 grant of Rule 50 motion on willful infringement because defendants had “a substantial defense to
2 infringement”).
3 II.
4 CONCLUSION AND ORDER
5 For these reasons, the Court grants Honda’s motion for judgment as a matter of law of no
6 willful infringement.
7 IT IS SO ORDERED.
8 DATED: March 2, 2009
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10 HON. DANA M. SABRAW
United States District Judge
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